1,4 Group Inc.v.WASHINGTON STATE UNIVERSITY

Patent Trial and Appeal Board

Feb 16, 2016

13820183 (P.T.A.B. Feb. 16, 2016)

Trials@uspto.gov Paper: 18
571-272-7822 Entered: February 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

1,4 GROUP, INC.,
Petitioner,

v.

WASHINGTON STATE UNIVERSITY,
Patent Owner.
____________

Case IPR2015-01153
Patent 8,999,419 B2
____________

Before MICHAEL P. TIERNEY, JON B. TORNQUIST, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION
Granting Joint Motion to Terminate
35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72, 42.74

IPR2015-01153
Patent 8,999,419 B2

2
On February 11, 2016, and pursuant to 35 U.S.C. § 317(a), the parties
filed a stipulation of dismissal and a joint motion to terminate the inter
partes review based upon a settlement agreement between the parties.
Papers 15, 16. The parties concurrently filed a copy of their Settlement
Agreement (Ex. 1),1 along with a joint request that it be treated as business
confidential and kept separate from the patent files pursuant to 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c). Paper 17.
The parties represent that termination is appropriate because the
parties have reached an amicable resolution of the inter partes review
through their Settlement Agreement.
These proceedings are at an early stage, as inter partes review was
instituted on October 23, 2015, and the Board has not yet decided the merits
of the proceeding. In view of the early stage of the proceeding and the
parties’ representation as set forth above, we determine that it is appropriate
to terminate these proceedings. See 37 C.F.R. § 42.72. Therefore, the joint
motion to terminate the inter partes review is granted. This paper does not
constitute a final written decision pursuant to 35 U.S.C. § 318(a).
The parties’ request that their Settlement Agreement (Ex. 1) be treated
as business confidential and kept separate from the patent files pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also granted.

1 The exhibit number fails to comply with the exhibit numbering
requirement of 37 C.F.R. § 42.63(c), but correction will not be required in
view of termination of the proceeding.
IPR2015-01153
Patent 8,999,419 B2

3
ORDER
Accordingly, it is:
ORDERED that the parties’ joint request that the Settlement
Agreement (Ex. 1) be treated as business confidential information and kept
separate from the patent files, is granted; and
FURTHER ORDERED that the joint motion to terminate is granted,
and the inter partes review is terminated.
IPR2015-01153
Patent 8,999,419 B2

4
PETITIONER:
Edgar Cataxinos
Elizabeth Schierman
TRASKBRITT, P.C.
ercataxinos@traskbritt.com
ehschierman@traskbritt.com

PATENT OWNER:
Michael Whitham
WHITHAM, CURTIS, CHRISTOFFERSON & COOK
mike@wcc-ip.com